Trademark

‘Internet’ Domain Name Dispute. Quite Literally.


We’ve covered domain name disputes before, but nothing quite like the case (which can be accessed here) that recently came up before the Delhi High Court, the judgement for which was delivered on 14th December by Justice Murlidhar.
On one side, we have the petitioner trying to defend his registration of the domain name www.internet.in and on the other, we have a registered trademark proprietor trying to challenge the registration on the ground that he is the owner of the trademark ‘internet’, which on face value seems silly, but gets even more absurd when it is learnt that the trademark was registered in respect of ‘Tobacco, raw or manufactured, smokers articles, matches included in Class 34’.
BACKGROUND TO THE CASE
Just backtracking, it is seen that the Respondent held the registration for the trade mark ‘internet’ under Class 34 with effect from March of 2003. The Petitioner, a resident of the U.S.A., got the domain name ‘internet.in’ registered with the .IN Registry in February of 2005. The Respondent wanted the registration of the domain name cancelled.
To recap, the arbitrator, in an award dated 5th July, 2006 made the following ruling:
1) The domain name ‘internet.in’ of the Petitioner herein was identical and confusingly similar to a trade mark of Respondent. However, the Respondent failed to show his rights in the mark.
2) The Petitioner had no right or legitimate interest in the domain name;
3) The Petitioner got registered the domain name ‘internet.in’ in bad faith.
4) The domain name ‘internet.in’ was to be confiscated by the .IN Registry and kept with it.
The dispute reached the Delhi High Court under S.34 of the Arbitration and Conciliation Act, for which the allowable grounds are that the decision is opposed to public policy of India or is patently illegal.
Arguments of the Respondent
Likelihood of confusion
The respondent claimed that he had been using the trademark ‘internet’ in relation to tobacco an tobacco products for over three years and that the domain name registered by the petitioner, ‘internet.in’ was confusingly similar to his registered trademark and demanded cancellation of the said domain. In rebutting the argument made by the Petitioner that the Respondent’s business was restricted to tobacco so there was no likelihood of confusion, it was argued that even if the domain name were to be used by the Petitioner for internet related services, there was bound to be confusion since it was identical to the registered mark of Respondent.
Bad faith registration
The respondent adduced evidence to suggest that the petitioner was in the habit of registering domain names in which he had no legitimate interest such as ‘air.in, computer.in, ink.in, toner.in, usa.in and wise.in’. Essentially, the respondent argued that the Petitioner was indulging in cyber-squatting, with the ultimate objective of selling them to an interested party at a much higher price at a later date. (See our post covering the Arun Jaitley cuber-squatting case here).
Arguments of the Petitioner
Burden on respondent
The Petitioner argued that the burden was on the Respondent to demonstrate that the mark ‘internet’, which is highly descriptive and generic, was capable of being trademarked or had acquired a secondary meaning. There was no record of sales, revenue, surveys, advertisements etc. provided by the Respondent and hence it had failed to demonstrate its right in the mark.
Legitimate use
On the issue of bad faith registration, the petitioner contended that it genuinely intended to “legitimately use the domain name (www.internet.in) as the identifier for internet related goods and services on a website.” Moreover, the Petitioner had not put up the domain for sale, indicating that it was not a case of ‘cyber squatting’ but simply ‘speculative registration’, which is permissible under law.
No knowledge of trademark
The Petitioner also claimed absence of knowledge of the Respondent’s right or interest in the mark ‘internet’ and moreover, that other domains such as internet.biz, internet.net etc. were still available, leading to the assumption that it was not a protected trademark.

Non-use of Trademark
 The Petitioner also alleged that that Respondent had sought to monopolize several generic words such as business, web, jobs, hotels, etc. without a shred of evidence of use of the said words as trademarks and neither had the respondent provided evidence of the use of the trademark ‘internet’ in relation to tobacco products as alleged in the plaint.

Registration for logo onlyIt was also submitted that the Respondent’s trademark registration was for the logo mark ‘internet’, which did not give him any rights in the word per se.
 
Different markets/usersLastly, it was contended that since the Petitioner intended to use the domain name for ‘internet related services’, as a generic word, there could be no confusion with the logo ‘internet’ registered for tobacco and associated tobacco products.
DECISION OF THE COURT
Differences between UDRP and INDRP
The Arbitrator interpreted Para 4(i) of the INDRP to mean that there was a burden on the complainant (in this case the Respondent) to show that (a) the domain name was confusingly similar to the trademark of the complainant and that (b) the complainant has a right in the trademark (the two elements mentioned in sub-para [i]). Thus, it was not necessary for the Respondent to establish the elements in part (ii) and (iii) relating to absence of interest of the Registrant in the domain and bad faith registration, respectively. Thus, the court ruled that the Respondent could success if he proved the existence of the grounds mentioned in sub-para (i) of Para 4 only. Alternatively he could succeed if he proved that the grounds in sub-paras (ii) and (iii) existed.
On the question of similarityOn the issue of the domain being identical to the registered trademark, the court held that there is no doubt that the domain name is likely to cause confusion in the minds of ‘persons of ordinary memory and imperfect recollection’ and that they are in fact identical. Further, in resolving the issue of ‘internet related services’ and ‘tobacco’ constituting different markets, users and class of goods/services, the court held that ‘the mere fact that the goods for which Respondent No. 2 holds registration is different from internet related services which the Petitioner proposes to offer using the domain name does not mitigate the possibility of such confusion, given the nature of e-commerce and the range of products that can be purchased on the net’.
Respondent’s interest in the trademarkThe second element required to be demonstrated in sub-para (i) of para 4 of the INDRP is the fact of the complainant (Respondent) having rights in the trademark, which is identical to the impugned domain name. The court deviated from the opinion expressed by the Arbitrator and observed that a combined reading of Section 28 (1) of the TM Act, which gives the registered proprietor of a trademark “the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered…” and Section 31 of the TM Act, which raises a presumption of validity of the registration, the Respondent in this case, had demonstrated a right over the mark ‘internet’.
Legitimate interest of the Registrant (Petitioner)
Although examining sub-paras (ii) and (iii) of para 4 of the INDRP was unnecessary since sub-para (i) conditions were satisfactorily demonstrated by the Respondent, the court went into a discussion on the same, nevertheless. It was seen that once the Respondent had discharged the initial burden of showing that the Petitioner had no legitimate interest in the domain name, it was the duty of the Petitioner thereafter to show “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. The court found that the Petitioner failed to provide evidence of the same.
Petitioner’s domain name registration was in bad faith
The Respondent argued before the court that the bulk registration of domains with no intention to pursue business activities was demonstrative of bad faith registration on the part of the Petitioner. The court considered it appropriate for the Arbitrator to question the intentions of the petitioner in registering 1747 domain names, several of which are generic in nature, to conduct businesses legitimately. In questioning the motives of the Petitioner, the court declared that “it is difficult to believe that the Petitioner, who is obviously an experienced hand in registering domain names, did not do any homework before registering domain names in a series of generic words like internet, toner, computer, ink etc. with the .IN Registry”.
ORDER OF THE COURT
While allowing the arbitrator’s award for cancellation of the registration of the domain, it found that the further order of the arbitrator to direct confiscation and retention of the said domain name by .IN Registry was without any legal basis since there was no provision for such a direction under Para 10 of the INDRP dealing with ‘remedies’. Neither should the domain be transferred to the Respondent who failed to demonstrate that he was using the mark ‘internet’ in line with his business.
Thus, the court passed the following order:
1) The domain name www.internet.in should be struck off the register and the registration stands cancelled.
2) The Respondent in not entitled to have the domain transferred in his favour.
3) The direction to have the domain confiscated by the .IN Registry is set aside.
While the entire case seemed like a boxing match between two parties that were, in my opinion at least, not fully coming clean with their underlying motives, tirelessly going back and forth with their arguments, it is extremely commendable that we have a well-reasoned judgment for future reference in domain name disputes and credit must go to Justice Murlidhar, who has time and again shown a genuine appreciation for the legal niceties in such matters and delivered another useful judgement on the issue of domain name disputes.

Update: Based on the discussions in the comments section, it appears the interpretation of the INDRP is a curious one and deserves further examination. Shamnad sir has explored this issue in a separate post that can be found here.

13 comments.

  1. Anonymous

    Amlan,
    I have read your blog with interest. I wish I should have read the judgment too prior to writing this comment. But then the judgment is not available at the moment and in any case what I understand is that you have in any case given the gist of the finding of the court.
    I wonder, if the petitioner’s domain is cancelled and at the same time it is not transferred to the respondent and it is even not confiscated, then what happens to the said domain name.
    The court has held it was the duty of the Petitioner thereafter to show “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. The court found that the Petitioner failed to provide evidence of the same. “
    I wonder if I could get the same registered if I am able to show “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.

    Reply
  2. Amlan Mohanty

    Dear Anon,

    The judgement can be found here: http://indiankanoon.org/doc/83474908/

    You raise an interesting point. I just tried a WHOIS search for the internet.in domain and found that the current Registrant is still NIXI.

    Moreover, no renewal, transfer etc. is possible. So it seems like the Arbitrator’s decision to have the domain name confiscated and transferred to NIXI is still operational, although this is just a guess, and based on the fact that the Delhi HC decision was just delivered two days ago.

    Perhaps once the decision is implemented, the domain will be made available again.

    Best,
    Amlan

    Reply
  3. Anonymous

    Thanks Amlan,
    Now the situation is that a person who in any case was having some interest in the said word has lost the case, yet any other person can still get the said domain. Is,nt it strange situation?
    [email protected]

    Reply
  4. Amlan Mohanty

    @Anon (8:15)

    But you assume that the Petitioner had an interest in the domain name, while a finding of fact has shown that ‘once the Respondent had discharged the initial burden of showing that the Petitioner had no legitimate interest in the domain name, it was the duty of the Petitioner thereafter to show “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. The court found that the Petitioner failed to provide evidence of the same.’

    The High Court thus found no legitimate interest on the part of the petitioner in the domain ‘internet.in’ which is why the registration was cancelled.

    Or do you mean to say the Respondent had an interest in the word ‘internet’ and should have been allowed to keep the domain?

    Reply
  5. Shamnad Basheer

    Hi Amlan:

    Something in the decision seems a bit odd to me (though not able to place my fingers on the precise spot). But let me try and spell out what worries me about this decision…

    Anyone is entitled to register a domain name—so long as they do not fall within the scope of the policy (bad faith and all that). Which means I can be deprived of a name only if I register in bad faith, coupled with a valid TM right (in favour of challenger) and lack of legitimate interest on my part. But I cannot be divested of a domain just because I lack a legitimate interest. Bad faith has to be necessarily proven. And mere non use should not (in my view) constitute bad faith, particularly when the trademark itself is otherwise a generic terms such as internet.

    Even otherwise, I would argue that using the term “internet” to attract internet traffic (not sure if he used it for selling ads etc) or to sell the name etc online is very much in the spirit of the term “internet” and should qualify as “legitimate” use. And is not “bad faith”. And this precisely is the problem when cybersquatting policy is extended too far to capture even generic terms such as “internet” and convert them to quasi proprietary terms.

    Thirdly, was the “trademark” internet in actual use by complainant. or had he merely got an Indian registration but not actually used it on his tobaco products?

    Lastly, I just flipped through the INDP arbitrator names and I’m not sure that a number of them are actually known for their trademark expertise. How did they get picked? We should investigate criteria for picking these arbitrators? For this pick would pretty much determine the quality of jurisprudence we get out of this body. I remember having scanned some of their decisions some years back, and their level of legal knowledge and articulation left a lot to be articulated. They make the IPAB (in its past avatar) look really really good!

    Reply
  6. Shamnad Basheer

    and here’s a potentially interesting outcome we might have from this case:

    1. the domain is cancelled. which means it falls open for anyone to now pick it up (since NIXI cannot keep it with itself)
    2. koenig manages to register as soon as it falls free. he now puts up a short history of the internet on the home page educating people about the internet….or he simply says “i am a big fan of the internet and love what it has done to me and my life.” legitimate interest? bona fide use?

    Reply
  7. Amlan Mohanty

    FIRSTLY, I completely agree that merely demonstrating a lack of legitimate interest is insiffucient to invoke the remedial provisions under the INDRP, since the presence of the conjunction ‘and’ betweem sub-paras (ii) and (iii) of Para 4 of the INDRP indicate that both elements must be satisfied. So both: Lack of legitimate interest + bad faith registration must be proved.

    However, Para 4, sub-para (i) allows the challenger to request cancellation of the domain name if it demonstrates that:
    (a) the domain name is similar to the registered mark, and
    (b) the challenger has a right over the mark.

    This was the provision used by the challenger and the court accepted it as well.

    So it seems like bad faith is not a necessary ingredient if sub-para (i) is sought to be proved, whereas both ‘lack of legitimate interest’ + ‘bad faith’ need to be proved if sub-para (i) is not used.

    While the UDRP says ‘the complainant must prove that each of these three elements are present.” [that is – (1) domain and mark are similar and challenger has rights/interest, (2) registrant does not have legitimate interest and (3) bad faith registration, the INDRP does not mention this. This indicates to me the possibility of a drafting error. Either way, this gives us something to think about.

    SECONDLY, I also completely agree with you on the possibility of using the ‘internet’ domain for legitimate uses in re internet related services. Cybersquatting policy, like you rightly point out, should not extend to speculative registration, and neither to highly descriptive terms like ‘internet’.

    THIRDLY, the Arbitrator ruled that there was no ‘use’ of the trademark ‘internet’ by the Respondent, but J. Murlidhar used provisions of the TM Act to establish prima facie validity of the mark based on mere registration.

    Now, this is the most important issue to me, since the INDRP has seemingly done away with the need to show ‘bad faith registration’ to request cancellation. But at the same time, the threshold for showing the challenger’s right over the trademark is far too low in my opinion. So essentially, all that is being proved by the complainant is that the mark and domain are identical and he possesses a certificate of registration (without showing use of the mark). This puts the registrant at a great disadvantage, in my opinion.
    Just my initial thoughts, so might have missed out something. Do let me know.

    Reply
  8. Anonymous

    Dear Amlan and Shamnad,

    I am happy to read your thoughts. Please continue with this in case you both have more to add. I had never thought that the domain disputes would be so much interesting.
    i raise an issue. Could not the respondent file a suit seeking restrain against the petitioner from using the impugned domain name being the registered proprietor of the trade mark seeking the help of Section 29(4) of Trade Marks Act, then in this manner had approached the civil court instead of approaching the INDRP?
    I remember having read the case on similar issue with respect to domain name arunjetley.com where the suit was filed. Of course the plaintiff there in did not seek the relief under Section 29(4) as the plaintiff was not holding any such kind of registration as the respondent in the present case had.

    Many Regards Anon 8.15AM and 8.27AM

    Reply
  9. Amlan Mohanty

    Without doubt the policy is the same for both remedies (cancellation or transfer), but the need to establish each of the elements or not, will turn on the way Para 4 of the INDRP is read.

    Quoting from the Koein judgement,

    “Para 4 INDRP is different from Para 4 (a) UNDRP in a significant way. While each of the sub-paras (i) to (iii) of Para 4 (a) of UNDRP are required to be ‘proved’ by the complainant cumulatively, as far as Para 4 INDRP is concerned the complainant can file a complaint on the ‘premises’ outlined in sub-paras (i) to (iii) of Para 4. There is no requirement that “each of the three elements” are shown to exist.”

    If that is true, it presents a whole set of difficulties, as I’ve mentioned above.

    Reply
  10. Shamnad Basheer

    well, thats a superbly flawed interpretation, isn’t it, Amlan?

    Going by the judges logic, a mere satisfaction of the first threshold itself would suffice. Since at least for the latter two, there is an “and”. Which means once I show that I have trademark rights in a name, I automatically get the name transferred or cancelled. notwithstanding the fact that the other person may have a legitimate interest and no bad faith at all! I’ll try and do a separate post on this soon.

    Reply
  11. Anonymous

    Shamnad,
    It really requires further discussion. It may be in this very article or separate post that you intend to do soon.

    Reply

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